[Direct answer]The rejection of a trademark is not final. According to Article 34 of the Trademark Law (effective as of November 1, 2019), the applicant may, within 15 days from the date of receipt of the rejection notice, apply to the China Intellectual Property Administration for a review of the rejection decision. The review decision shall generally be made within nine months. If the applicant disagrees with the decision, he/she may file a lawsuit with the court within 30 days from the date of receipt of the notice. If only some of the designated goods are rejected, the applicant may apply for separate registration of the unrejected parts. The success or failure of the review depends on the reasons for the rejection. If the trademark is rejected because of similarity with an earlier trademark, the applicant should demonstrate the differences between the two trademarks and cooperate with the removal of third-party objections and invalidation. If the trademark is rejected because of lack of distinctiveness, the applicant should submit evidence of actual use. It is recommended to consult as soon as possible.Intellectual property protection and corporate legal services.

1. Problem background and typical scenarios

The rejection rate of trademark registration applications has been persistently high for years, and both startups and brand owners often encounter such situations: receiving a "Trademark Rejection Notice". Some applications are rejected because they are too similar to previously registered trademarks, others because they lack distinctive features, and still others because they violate prohibited provisions. The rejection notice specifies the cited trademarks and the reasons for the rejection, and also sets a 15-day review period. If the review is not completed within the deadline, the rejection will become effective and the application will be invalidated. Typical concerns of applicants include: Is being rejected equivalent to a death sentence? Is it worth appealing for a review? What should I do if the cited trademarks block my path? Should I use the trademark first and then appeal? The review of a rejection is a crucial step in the trademark ownership process. If handled properly, it can reverse the outcome; if not, it will result in the loss of the application date and prior rights.

II. Key points of contention

  • Judgment on similarity and confusion: The review focuses on the overall comparison of the sound, shape, and meaning of the applied trademark and the cited trademark, while considering the similarity of the designated goods and services, the prominent identifying parts, and the possibility of confusion. The defense based solely on individual letter or font differences has limited effectiveness and requires systematic argumentation.
  • Significance and evidence of use: If a trademark is rejected due to a lack of significance, it can gain registrability through long-term and extensive use. Evidence of use such as contract invoices, advertising campaigns, and market rankings are the core of the re-examination defense.
  • Eliminating obstacles to citation of trademarks: For trademarks registered for more than three years, an application for revocation can be filed if they have not been used for three consecutive years. If there are defects in prior rights, an application for declaration of invalidity can be filed. After the obstacles are eliminated, the door for re-examination or re-application is immediately opened, and these actions can be combined with each other.Intellectual property protection and corporate legal servicesCoordinate and arrange everything in an organized manner.

III. Professional analysis by Henglue Law Firm

The review of the counter-claim and subsequent rights protection share the same set of criteria for determining similarity and analyzing confusion. A trademark infringement and unfair competition case handled by Henglue Law Firm can be used as a reference. The plaintiff, Company A, is a well-known domestic paper industry enterprise. Its "EFGH" trademark is approved for use on Category 5 sanitary napkins, and has been recognized as a well-known trademark by courts and administrative authorities in multiple regions. The defendant, Company B, was established in November 2020 and obtained authorization from a third party in September 2023 to use the "EFGK" registered trademark and design patent to produce and sell "EFGK" sanitary napkins, which were sold on the e-commerce platform of Company C. In April 2024, Company A sued, claiming that "EFGK" imitated the well-known trademark "EFGH" and caused packaging and decoration confusion, demanding that the infringement be stopped and seeking compensation of 980,000 yuan. Company B entrusted Henglue Law Firm to defend against the lawsuit.

The lawyer's defense focused on the elements of similarity determination: "EFGK" originated from a legally registered trademark and valid authorization, and the suffix "GK" differed significantly from "GH". The relevant public could distinguish them by overall recognition; the packaging and decoration originated from a design patent, and Company A only submitted copyright registration without proving actual use and recognition, which did not constitute a packaging and decoration with certain influence; and Company B's authorization period was short, production volume was low, pricing was low, and production had already ceased, so there was no factual basis for high compensation. The court partially accepted the defense: it determined that "EFGH" constituted a well-known trademark when "EFGK" was applied for, and Company B's use constituted imitation. It ordered the cessation of infringement and the publication of a notice to eliminate the impact; but because Company A failed to prove that the packaging and decoration had a certain influence, the court rejected the claim of unfair competition. Given the short infringement period and small scale, the court determined the compensation for economic losses to be 50,000 yuan and reasonable expenses to be 10,000 yuan, totaling 60,000 yuan, which was more than 980,000 yuan lower than the claim. Overall comparison, identification of prominent parts, and rights sources and usage status are precisely the same set of elements that determine the success or failure of the review defense.

IV. Practical suggestions and legal basis

Legal basis: Article 30 of the Trademark Law (effective November 1, 2019) stipulates that if the trademark applied for registration is identical or similar to a trademark previously registered or preliminarily approved by others, the application shall be rejected; Article 11 stipulates that signs lacking distinctive features shall not be registered, except for those that acquire distinctive features and are easily recognizable through use; Article 34 establishes a review procedure. Applicants may apply for review within 15 days from the date of receipt of the rejection notice. The review decision shall generally be made within nine months. In special circumstances, the review period may be extended by three months. If dissatisfied with the decision, applicants may file a lawsuit with the court within 30 days from the date of receipt of the notice. Practical suggestions: After receiving the rejection notice, immediately check the reasons for rejection and the cited trademarks, and make a review decision within 15 days; simultaneously evaluate the application for cancellation of the cited trademark that has been registered for three years, exchanging the removal of obstacles for a successful review; the review response should submit a list of evidence of use – sales contracts and invoices, promotion records, industry rankings, and honorary certificates, and compare each item based on differences in sound, form, and meaning; if some designated products are rejected, evaluate the application for partitioning the unrejected parts and obtaining registration protection for core categories first; if the review fails, litigation can still be initiated within 30 days, and procedural rights should be utilized properly. If you need to plan brand protection simultaneously, you can learn more about it.Intellectual property protection and corporate legal services.

5. Henglue Law Firm's Advice

The trademark rejection is a procedure rather than an outcome. The real turning point lies in whether we can come up with a targeted defense and a plan to remove obstacles within the 15-day review period. Delaying the review or allowing the rejection to take effect may result in all the brand's efforts going to waste for others. The aforementioned trademark infringement and compensation case was handled by Beijing Henglu Law Firm.Liu YuanyuanThe lawyer (practice license number: 11101202011201094, subject to the document issued by the judicial administrative organ) acted on behalf of the client. The court reduced the claim from 980,000 yuan to 60,000 yuan. His grasp of the similarity judgment criteria also applies to the review and defense. It is advisable to evaluate brand issues as early as possible, and this can be done throughBeijing Henglu Law FirmObtain the full process solution.

Q1: If a trademark is rejected, can it still be successfully registered? What are the chances of success?

It depends on the reason for the rejection. If the trademark is rejected due to similarity with a prior trademark, there is an objective possibility that the review will be successful if the sound, shape, and meaning of the logo can be distinguished. At the same time, it can remove the cited trademark through the procedures of revocation, invalidation, or negotiate a coexistence agreement with the rights holder of the cited trademark. If the trademark is rejected due to lack of distinctiveness, it will be more difficult to succeed. If the trademark is rejected due to violating absolute grounds such as prohibited clauses, the success rate will be the lowest. In any case, an application for review should be submitted within 15 days after receiving the notice (Article 34 of the Trademark Law, implemented on November 1, 2019). If the deadline is missed, the rejection will take effect, and there will be no chance to argue against it.

Q2: What evidence and materials are required to prepare for the review of a rebuttal?

There are three types of materials: 1. **Procedural materials**: These include rejection notices, review application letters, and power of attorney documents. 2. **Legal argumentation materials**: These include opinions on the phonetic, graphic, and semantic comparisons between the applied trademark and the cited trademarks, analyses of the similarity of goods and services, and reference cases such as prior rulings or judgments. 3. **Evidence of use**: This is the most crucial category, including sales contracts and invoices, advertising placement contracts and placement records, photos of offline stores and exhibitions, industry rankings and award certificates, and proof of the earliest date of use. The use of evidence should demonstrate the specific usage methods, duration, and coverage of the trademark, forming a complete chain of evidence. Isolated or scattered documents have limited probative value.

Q3: How much does it cost to appeal for review?

The fees consist of three parts: the reviewer's fee paid to the China Intellectual Property Administration, which is charged according to the current fee standard; the service fee of the agency, which is priced based on the difficulty of the case, the number of cited trademarks, and the amount of argumentation work; and if it is necessary to clear the obstacles of cited trademarks, there are additional official fees and agency fees for "withdrawing three trademarks" or declaring invalidation. The time cost should also be included in the budget — the review decision should generally be made within nine months after the application, and in special circumstances, it can be extended for three months with approval (Article 34 of the Trademark Law). Before entrusting the agency, the applicant should require the agency to provide a written assessment of the reasons for rejection, the chances of success, and the overall fees, to avoid over-investing in cases with too low success rates.

Q4: How long will the review and subsequent litigation take respectively?

Review stage: The China Intellectual Property Administration shall generally make a decision within nine months from the date of receiving the review application, and may extend the time limit by three months under special circumstances upon approval; if dissatisfied with the review decision, one may file a lawsuit with the court within 30 days from the date of receiving the notice. Litigation stage: Administrative cases of trademark authorization and ownership determination are generally concluded within six months at first instance and three months at second instance. From the start of the review to the judgment of the second instance, the whole process requires about a year and a half if everything goes smoothly; if procedures such as the removal of three-year objections and invalidation declarations are added, the time period will be correspondingly extended, so brands should reserve sufficient time for use and promotion planning.

Q5: Is it possible to directly resubmit the registration application without applying for a review?

In most cases, this is not recommended. Reapplying will result in the loss of the original application date, and the trademark application will likely be rejected again if the cited trademarks have not been cleared, essentially going nowhere. However, during the review of the rejection, the application date for the trademark application will still be retained, and the priority of the earlier application will be of great significance in subsequent disputes. Only when the reasons for the rejection are obviously indisputable (such as a clear violation of the prohibited provisions), or when the cited trademarks are about to reach the three-year registration period and can first initiate the "withdrawal of three-year priority" procedure, will the combination of "withdrawal of three-year priority plus a new application" be more cost-effective. Before deciding to give up the review, it is essential to have a professional evaluate the reasons for the rejection and the feasibility of withdrawing the three-year priority, and then make a decision based on that assessment.

If you are currently facing similar problems, it is recommended that you consult a professional lawyer as soon as possible with the relevant evidence, in order to avoid missing the statutory time limit.Intellectual property protection legal services·Attorney Liu Yuanyuan·Beijing Henglue Law Firm